Registrar of Trade Marks v. Hamdard National Foundation (India)
In the annals of Indian trademark law, few cases illustrate the delicate balance between descriptive words and distinctive marks as vividly as Registrar of Trade Marks v. Hamdard National Foundation (India). Decided on March 4, 1980, by the Delhi High Court, this dispute pits the Registrar of Trade Marks against a renowned manufacturer of medicinal preparations over the registrability of the word “SAFI”.
At its heart, the case explores whether a term with potential descriptive undertones can transcend its dictionary meaning to become a badge of origin, capable of distinguishing one trader’s goods from another. The judgment not only resolves a specific contention but also enriches the jurisprudence surrounding the Trade and Merchandise Marks Act, 1958, offering a nuanced perspective on the interplay between inherent distinctiveness and acquired secondary meaning.
Detailed Factual Background
Hamdard National Foundation (India), the respondent, is a well-established entity known for producing medicinal preparations, including “SAFI”, a concoction marketed for blood purification. The origins of “SAFI” as a trademark trace back over two decades prior to the litigation, with continuous use cementing its association with Hamdard’s products.
The word “SAFI”, derived from Urdu and Persian, carries multiple meanings—ranging from “pure,” “fine,” and “clear” to a “cloth used for straining beverages and medicines” or even a “duster.” Hamdard sought to register “SAFI” as a trademark under Class 5 of the Fourth Schedule of the Trade and Merchandise Marks Rules, 1959, which encompasses pharmaceutical and medicinal preparations. Initially applying for registration in Part A of the Register, Hamdard later amended its request to Part B, reflecting a strategic shift in its legal approach.
The Registrar of Trade Marks, tasked with maintaining the integrity of the trademark register, opposed this application. The Registrar argued that “SAFI” was a descriptive term, directly referencing the character or quality of Hamdard’s blood-purifying preparation, and thus lacked the inherent capability to distinguish the respondent’s goods from those of other traders.
Detailed Procedural Background
Hamdard’s journey to secure trademark registration began with an application to the Registrar of Trade Marks under the Trade and Merchandise Marks Act, 1958. The Registrar rejected the application, citing Section 9. Aggrieved, Hamdard appealed to the Delhi High Court, where a learned Single Judge overturned the Registrar’s decision, granting registration in Part B.
Dissatisfied with this outcome, the Registrar escalated the matter to a Division Bench of the Delhi High Court, comprising Justice Rajindar Sachar and a companion judge. On March 4, 1980, the Division Bench dismissed the appeal, affirming the Single Judge’s order, albeit on different reasoning.
Issues Involved in the Case
- Whether the word “SAFI” is descriptive of the character or quality of Hamdard’s medicinal preparation, thus falling under the prohibition of Section 9(1)(d) for Part A registration.
- Whether “SAFI” meets the criteria for Part B registration under Section 9(4), requiring a mark to be capable of distinguishing the applicant’s goods.
- Whether prolonged use of “SAFI” by Hamdard has imbued it with a secondary meaning, enabling it to distinguish Hamdard’s products from others.
Detailed Submission of Parties
Registrar’s Arguments: The Registrar contended that “SAFI” was inherently descriptive, alluding to the purity or clarity associated with Hamdard’s blood-purifying preparation. Relying on dictionary definitions such as “pure” and “clear”, the Registrar argued that it fell under Section 9(1)(d) and was not inherently capable of distinguishing goods under Sections 9(4) and 9(5).
Hamdard’s Arguments: Hamdard countered that “SAFI” was not a commonly used descriptive term. It highlighted the diverse dictionary meanings, asserting the word was unusual and distinct. Hamdard emphasized over 20 years of continuous use of “SAFI”, arguing that this long-term use had created a secondary meaning linking the mark to its products alone.
Judgments Cited and Their Context
The Division Bench referenced the English case In the Matter of an Application by J & P Coats Ltd. [53 R.P.C. 355], which held that a descriptive word could acquire distinctiveness through use. The court emphasized that registrability depends on factual evidence of distinctiveness, not just the dictionary meaning.
Hamdard relied on this to show that “SAFI”, though possibly descriptive, had become distinctive. The Registrar, in contrast, leaned on statutory interpretation without citing case law to rebut the precedent.
Judicial Reasoning and Analysis
The Division Bench did not definitively rule whether “SAFI” was descriptive under Section 9(1)(d), since the application was for Part B registration. Under Section 9(4), the requirement is more flexible—merely that a mark be capable of distinguishing goods.
The court acknowledged “SAFI” had meanings such as “pure” or “clear” but also included neutral terms like “duster” and “straining cloth.” It criticized the Registrar for providing no evidence beyond assertion to prove inherent descriptiveness.
Relying on the precedent in J & P Coats, the court held that descriptiveness does not inherently preclude registration if the mark has acquired secondary meaning. The evidence confirmed that Hamdard had continuously used “SAFI” for over 20 years with no competing use, satisfying Section 9(5)(b).
The Bench distinguished its approach from the Single Judge by focusing on acquired distinctiveness rather than non-descriptiveness.
Final Decision
The Division Bench dismissed the Registrar’s appeal, upheld the Single Judge’s order, and allowed the registration of “SAFI” in Part B of the Register. However, it relied on different reasoning, focusing on factual distinctiveness through prolonged use. No costs were awarded.
Law Settled in This Case
- For Part B registration, a mark need not be inherently distinctive—it is enough if the mark is capable of distinguishing the goods.
- Descriptive words may acquire a secondary meaning through long, exclusive use, making them registrable.
- The decision emphasizes commercial reality and consumer perception over rigid dictionary definitions.
Case Details
- Case Title: Registrar of Trade Marks Vs. Hamdard National Foundation (India)
- Date of Order: March 4, 1980
- Citation: 1980 RLR 514, AIR 1980 Delhi 180, 17 (1980) DLT 521
- Court: High Court of Delhi
- Judge: Hon’ble Justice Shri Rajindar Sachar
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539
